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AIA Post-Grant Oppositions After 2 Years: Where Do We Go from Here?

October 07, 2014

​Fenwick & West patent partner Stuart Meyer was featured in a Bloomberg BNA Patent, Trademark & Copyright Journal article examining the procedures available for patents issued under the America Invents Act's (AIA) first-inventor-to-file (FITF) system, and the small number of post-grant review (PGR) petitions that have been filed so far.

PGR was created under the AIA to challenge the validity of claims in patents filed on or after March 16, 2013, the date the FITF system took effect, but only two PGR petitions had been filed as of October 2, 2014. The article suggests that the small number of PGR petitions in process may be partly because would-be PGR petitioners are unsure about the new system and so are tying claims to pre-FITF dates.

According to the Journal, Meyer had "interesting observations" about possible reasons why these two PGR petitions were filed despite general hesitation about the new system.

"Since they both involve patents that were based on prior applications, they afford the petitioners certain benefits that might not otherwise be available," Meyer told the publication. "For example, the estoppel provisions that might otherwise cause a potential petitioner to hesitate may not be as scary where the petitioner can still raise similar defenses against a parent patent in court, with the likely result carrying over to the child patent."

In addition, Meyer noted that "since follow-on applications are typically filed to address something not central to the original application, there is an obvious increased likelihood that they will be examined to see whether the various [written description and enablement] requirements of Section 112 are met."

Meyer added that, with regard to Patent Trial and Appeal Board (PTAB) scrutiny of Section 112 issues generally, "it seems reasonable to assume that the PTAB is not going to be as deferential to Section 112 issues as a court might be," and that "a technically trained administrative patent judge will be more willing than a district court judge to delve into the nuances of Section 112, whether the invention deals with a mechanical device or a pharmaceutical formulation."

The full article is available through the Bloomberg BNA Patent, Trademark & Copyright Journal (subscription required).